Seeds of Exhaustion: Monsanto Is Coming to the United States Supreme Court

[author: Michael Shuster]

On October 5, the United States Supreme Court agreed to review the case Bowman v. Monsanto Co., Docket No. 11-796 (USSC 2012). The high court will be taking on the question of patent exhaustion in seeds, specifically Monsanto's "Roundup Ready" seeds. Monsanto sells the seeds, which grow into plants resistant to the herbicide glyphosate, aka Roundup. Bloomberg coverage of the case highlights the legal issues surrounding the conditional sale exemption, a doctrine adopted by the Federal Circuit, allowing patent holders to enforce their rights against buyers downstream.

We don't have the briefs yet, or for that matter the amici briefs which will no doubt be plentiful and fascinating, but we can gather from the questions presented by the parties in favor of and opposition to the writ that this could well be a seminal patent case (apologies for the pun). Law professor, Dennis Crouch, covers the latest developments in the case on the Patently-O blog.

Bowman argues that he is entitled to the patent exhaustion doctrine. That is to say that after the original authorized sale of the seeds Monsanto's patent rights are extinguished, which is how the patent exhaustion works in most other products. Of course as a practical matter this means that a farmer needs to buy Monsanto's seeds only once, because every subsequent generation of seeds germinated from the plants sprouting from the originals are free and unencumbered by the patent rights that belong to the original generation. Bowman asks the Supreme Court to find that the Federal Circuit erred when it created, in Bowman's view, "an exception to the doctrine of patent exhaustion for self-replicating technologies."

Monsanto argues that it owns patent rights in a genetically modified plant, and the fact that it is a self-replicating living organism is irrelevant because the patent rights "are independently applicable to each generation of soybeans embodying the invention, such that a grower who, without authorization from Monsanto, creates a new generation of genetically modified soybeans infringes Monsanto's patents."

It is never a good idea to attempt to predict a Supreme Court outcome, especially before the briefs have even been filed, but given the Court's recent track record on life science patents this may not yield a good outcome for Monsanto.